-Vb^°\ 



Price Twenty-five Cents. 

Copyrighted. 



H. A. TOULMIN, A. H. SEMMES, 

Attorney at Law. General Stenographer. 

Meek.' I Expert and Dr'tsman. 

Inventors' Patent Manual, 

RELATING TO 

ltd States i foreign Patents 



TOULMIN & SEMMES, 

(H. A. Toulmin, late Gen'l Manager for Alexander & Mason,) 

Attorneys at Law 

AHD 

y 

COUNSELLORS in PATENT CASES, 
709 C St., N. W., 

BY PERMISSION- WE REfiSR TO 

Mr. Eugene Carusi, Professor of Law, National 
Law University. ^^^^g^^ --- -- . 

Hon. John T. Morgan, United States Senator. 

Mr. Justice McArthtjr, of the Supreme Court of the 
District of Columbia. 

Hon. H. O. Claughton, Professor of Law, National 
Law Universitv. 



LAW AND PATENT OFFICES. 



TOULMIN & SEMMES, 

(H. A. Toulmin, late Gen'l Manager for Alexander & Mason,) 
ATTORNEYS AT LAW 

AND 

Counsellors in Patent Cases, 

709 G Street, N. W., 



To Inventors, Manufacturers, and all interested 
in Patents : 

In publishing this pamphlet, and offering 
our services to inventors, we respectfully in- 
vite attention to our facilities for securing 
United States and Foreign Patents, and for 
conducting the several branches of this pro- 
fession. 

It has been our object in consulting the inter- 
ests of clients to give particular attention to 
promptness in the preparation of their cases, 
and to fidelity and perseverence in their pros- 
ecution. 



The system of granting letters-patent for 
inventions lias its foundation and origin in the 
policy of enlightened governments to stimulate 
and encourage advancement and progress in 
the industrial arts, and such grants are in their 
nature analagous to contracts, the inventors 
and the public being parties thereto, and the 
consideration being established by statute. 

From this it follows that the right of property 
which is protected by a patent is defined and 
measured by the language in which the speci- 
fication and claims are couched, and in this con- 
nection section 4888 of the Revised Statutes 
enacts : u Before any inventor or discoverer 
shall receive a patent for his invention or dis- 
covery, he shall make application therefor, in 
writing, to the Commissioner of Patents, and 
shall file in the Patent Office a written descrip- 
tion of the same, and of the manner and process 
of making, constructing, compounding, and 
using it, in such full, clear, concise, and exact 
terms as to enable any person skilled in the art 
or science to which it appertains, or with which 
it is most nearly connected, to make, construct, 
compound, and use the same ; and in case of a 
machine, he shall explain the principle there- 
of, and the best mode in which he has contem- 
plated applying that principle, so as to distin- 
guish it from other inventions." 

In following out the requirements of this 
statute, it is essential that the attorney to 
whose hands the invention is committed should 
have full knowledge of its legal consequences, 
and be thoroughly and accurately acquainted 
with the law, and have a competent knowledge 
of mechanics generally. 

It has of late been judicially rendered in this 
connection that "the description in a patent 
must be so full and plain that a fairly compe- 



tent workman in the art conlcl take it and, ex- 
ercising the then existing knowledge of the 
trade, follow it out, and by it, without in- 
vention or addition, construct an operative ma- 
chine containing the parts mentioned in com- 
bination. If it requires experiment and inven- 
tion to make and use the matter described, the 
patent is invalid;" and to the same effect the 
like doctrine has been declared in Curtis on 
Patents, section 255 ; Turner vs. Winter, 1 D. 
and E. 602; Evans vs. Eaton, 7 Wheat, 356; 
McFarlane vs. Price, 1st Stark, 158 ; The King 
vs. Arkwright, 1 Webs. Patent Cases, 64. 

Because of the fact that under our practice 
the courts are without power to afford relief to 
an inventor if his patent is narrower in scope 
than his invention, it becomes of prime import- 
ance that it should be drawn by those only who 
are skilled in this department of patent practice, 
in order that this instrument, which is the con- 
tract wherein his rights are pointed out by metes 
and bounds, may include in it that full, clear 
and exact description contemplated by the 
statute, and those clauses designated as claims, 
so full as to positively and unmistakably ex- 
tend to and embrace every feature of novelty 
to which the inventor is entitled. 

In this connection the matter of competent 
counsel has been considered of so great import- 
ance that it has received official notice and been 
reduced to a written rule. The Rules of Prac- 
tice of the Patent Office, under the revision of 
September 1st, 1880, embody the following : 
" As the value of patents depends largely upon 
the careful preparation of the specifications and 
claims, the assistance of competent counsel will 
in most cases be of advantage to the applicant ; 
but the value of their services will be proportion- 



ate to their skill and honesty, and too much care 
cannot be exercised in their selection." 

WHAT MAY BE PATENTED. 

A patent may be obtained for any new and 
useful art, machine, process, manufacture, de- 
sign or composition of matter, or for any im- 
provement thereof. 

TO WHOM GRANTED. 

A patent may be granted to any person, 
whether citizen or alien, for his invention or 
discovery, provided the same has not been 
known or used by others in this country, or 
has not been patented or described in any 
printed publication in this or any foreign coun- 
try, nor been in public use or on sale for more 
than two years prior to his application. 

In case of the death of the inventor, the pat- 
ent may be applied for by, and issued to, his 
administrator or executor. It may be issued 
in the name of the inventor and his assignees; 
or to him, as the inventor, and to the assignees 
as the owners. 

MOW TO OBTAIN A VAUD PATENT. 

The first step to be taken in this direction is 
to ascertain whether the invention is patenta- 
ble, or whether it, or any substantial part 
thereof, has been patented by another. 

For this purpose a preliminary examination 
is advisable in every instance, and it consists 
in making a thorough and exhaustive search 
in the Patent Office through the class to which 
the invention appertains. We have made this 
branch of our practice a special object, for by 
following it we are enabled to intelligently cle- 



fi 



cide upon the question of the patentability of 
the invention with comparative certainty. 

Another important result of searches of this 
character is that by them we are brought into 
contact with the previous inventions of the class 
under consideration, immediately before pre- 
paring* our client's case, which enables us the 
more readily to distinguish between the old and 
the new, and to bring out the points of novelty 
and special utility possessed by the new inven- 
tion. 

Upon the receipt of an intelligible sketch and 
a brief description, we will advise inventors as to 
the patentability of their inventions or discov- 
eries. But for a special search of the character 
just referred to, we make a charge of live dol- 
lars in advance, which fee, should the report 
be unfavorable, covers the cost of copies of the 
references, which copies we forward. But 
should the examination result favorably, we 
report accordingly, and require a remittance of 
fifteen dollars, the first Government fee. On 
receipt of this fee, we immediately prepare the 
necessary drawings, the petition, oath, and 
specification, and forward them for the invent- 
or's personal inspection and execution. When 
these papers are returned to us, together with 
fifteen dollars, part of our professional charge, 
the case is promptly filed in the Patent Office, 
and diligently prosecuted. When the applica- 
tion is allowed, the remaining installment of 
the agency fee, namely, fifteen dollars, is due. 
The final Government fee of twenty dollars 
can be paid at any time within six months from 
the date of the allowance ; but in every instance 
we advise, in fact recommend, its prompt pay- 
ment, as delay in this particular not infre- 
quently involves the applicant in a vexatious 
litigation known as an interference. 



g PECIFICATIONS. 

The specification being' the ground-work of 
the patent, or that instrument which embodies 
a statement of the invention as regards its ob- 
jects, its mechanical construction, and mode of 
operation, is therefore one to which too much 
attention cauuot be paid. It should be full 
and copious, disclosing and describing the thing 
sought to be patented in a most exact and lucid 
manner; should clearly distinguish between 
what is old and known and what is new 7 , and 
should be free from ambiguity, so that if the 
patent is brought into the courts no trouble 
will arise in understanding and appreciating 
the invention. 

CLAIMS. 

As the value and right of property embodied 
in a patent exist essentially in the claims, it 
is therefore a matter of the greatest import- 
ance that they should be drawn by those only 
who have a full knowledge of their legal effect, 
and that their scope and comprehensiveness 
should be directed to include all that the in- 
ventor is lawfully entitled to, still guarding, 
on the other hand, against making them too 
broad, as such would result in rendering the 
patent invalid rather than in affording that 
rightful protection contemplated bylaw. 

There was a time when it was thought that 
if an invention was simply patented ample pro- 
tection was thereby afforded ; but the exten- 
sive investments and enterprises connected 
with patent property have taught, especially 
the manufacturing public, that the scope and 
protection is defined by the language employed 
in the construction of the claims. 



A patent, the claims of which are properly 
drawn, is much more easily introduced among 
manufacturers, for the reason that when sub- 
mitted to their consulting counsel he is able to 
advise them with certainty as to the scope 
and meaning of the patent; and again this re- 
gard to the character of the claims frequently 
saves the necessity of litigation, since their 
clearness and unmistakable meaning makes it 
practicable for the defendant's counsel to pass 
upon, with comparative ease and certaint}^, the 
alleged infringement. 

DRAWINGS. 

Upon the fullness, clearness, and accuracy of 
the drawings depend in many instances not 
only the value, but also the validity of patents. 
There is a great number of existing patents 
Avhich are so poorly illustrated as to make it a 
difficult matter to ascertain exactly what con- 
struction was intended by the inventor. Such 
defects prove a source of serious trouble when 
it is desired to dispose of a patent or to test the 
validity of the same should it be brought before 
a court; the ambiguity thus arising making it 
also necessary to enter into certain explana- 
tions regarding the exact construction of the 
device, when negotiating with purchasers and 
manufacturers. To avoid these difficulties is 
our constant aim, seeing that ever} T feature of 
the invention is properly and clearly illustrated. 

MODEI^. 

While under the present practice of the Fat- 
ent Office models are not ia every case required, 
it is discretionary with the Examiner; and 
by # far the better plan, for an inventor to fur- 



nish one. In this way unnecessary delays and 

expense are in many instances avoided. 

CAVEAT. 

The object of a caveat is to afford protection 
to the inventor while experimenting' on his in- 
vention, and it consists of a drawing- and de- 
scription of the incomplete invention. 

Caveats remain in force one year from the 
date of riling, and enlitle the caveator to notice 
if an application is made for a patent on a con- 
flicting invention during that time. 

They can be renewed from year to year. 

INTERFERENCES. 

An interference is a proceedidg instituted for 
the purpose of determining- the question of 
priority of invention between two or more 
parties laying claim to substantial^ the same 
subject-matter. 

The}' are decided upon the evidence adduced 
by the respective parties, and owing to the 
questions of "abandonment," "joint owner- 
ship," "public use," "reduction to practice,*' 
&c, &c, which are incidentally involved in pro- 
ceedings of this character, they require for their 
judicious management much technical learning 
and legal ability, together with a nice discrim- 
ination and a thorough mechanical knowledge. 

REISSUES. 

The object of a reissue is to correct any de- 
fects in the original letters-patent, which may 
have arisen through inadvertence, accident or 
mistake, whereby it may be rendered inopera- 
tive or invalid. Nothing can be embraced in a 



9 



reissue that was not shown or described in the 
original patent ; and if the purpose of the re- 
issue is to enlarge or expand the scope of the 
claims, it is necessary under the recent decisions 
of the courts, that such reissue application 
should be made within a reasonable time after 
the date of the original, it being unsafe to delay 
more than two years. 

As it is a fact well known that many defect- 
ive patents are constantly issuing which, either 
through misapprehension on the part of the in- 
ventors as to the vital points of the inventions 
or through the incompetency of attorneys, fail 
to afford adequate protection ; we would there- 
fore advise and suggest, in view of the recent 
decisions relative to reissues, that parties owning 
such patents, submit them without delay to com- 
petent counsel for examination and report, as 
to the probability of remedying the defects by a 
reissue. 

We are engaged, particularly, in this branch 
of the practice, and upon the receipt of the date 
and number of the patent, together with a 
statement of the supposed defects and a remit- 
tance of ten dollars to cover the time and labor 
involved, we shall be pleased to make a re- 
port and render an opinion as to the proper 
course to pursue. Should the reissue be applied 
for, this charge is credited on account of the re- 
maining fees, which are governed by the services 
rendered in each case and agreed upon before 
it is proceeded with. 

REJECTED CASES. 

Owing to the fact that applications are fre- 
quently rejected, and never afterwards dili- 
gently prosecuted, there necessarily accumu- 
lates under this category a large number of 



10 



valuable inventions. Cases of this character 
entrusted to us receive prompt investigation, 
after which a report is made as to the real prob- 
ability of securing a patent by further and 
careful prosecution. If, in our opinion, a pat- 
ent can be secured, the fees are about the same 
as in ordinary original applications, and are 
agreed upon before proceeding with the case. 
We give these cases particular attention. 

APPEALS. 

The necessity of an appeal arises when an ap- 
plication is finally rejected by the Examiner, 
the resort being first to the Board of Exami- 
ners-in-Chief, the Government fee for which is 
ten dollars. From an adverse decision by the 
Board, an appeal lies to the Commissioner in 
person, and from him to the Supreme Court of 
the District of Columbia sitting in banc. 

The proper conduct of appeals requires great 
skill and professional qualifications, the facul- 
ties of clear discernment and argumentative 
force being pre-eminently requisite. Our charge 
for such cases is determined by the character of 
the case itself, and is agreed npon before it is 
undertaken. 

TRADEMARKS, 

Persons, firms and corporations wishing to 
register trade-marks, should first send us copies 
or fac-similes of the same, stating what partic- 
ular class of merchandise they have used them 
upon. When this information is received, the 
proper papers will be promptly prepared and 
forwarded for execution. The registration re- 
mains in force thirty years. 



II 

DESIONS. 

Patents are granted for any new and original 
design for a term of three and one-half, seven, or 
fourteen years. The applicant should send ns 
photographs or engravings of the design. 

PRINTS AND ISABELS, 

To he attached to manufactured goods, may 
he registered in the Patent Office, such regis- 
tration being for a term of twenty-eight years* 

I.EGAI, OPINIONS. 

We make it a special object of practice to 
prepare written legal opinions on all questions 
relating to patent causes. Owing to the en- 
couragement held out by the U. S. Patent sys- 
tem, there have developed on this account very- 
large and extensive business enterprises, which 
operate exclusively upon patent property and 
which depend upon letters-patent for their pro- 
tection. 

It becomes necessary then that such insti- 
tutions should be well acquainted with the 
scope and legal significance of the patents under 
which they are operating, for which purpose it 
is primarily essential that they should ascertain 
whether their patents are valid, as well as 
whether they are being infringed upon by others* 
The object of the opinions here alluded to, is 
to ascertain these facts. To the proper pre- 
paration of them it is essential that thorough 
investigation should be made through the U. 
S. and Foreign patents, and through scientific 
works relating to the particular subject in hand. 

It not unfrequently happens that manufactur- 
ers engaged in the sale of machinery and differ- 
ent articles of commerce protected by patents,, 



12 



are attacked by threats and allegations from 
competing firms in the trade, that their goods 
are infringements of the patents owned by 
the latter, and that they will prosecute all 
persons thus engaged; the result of which is 
to frequently stifle these business enterprises 
and to drive off' customers, while in many 
cases no infringement exists. Instances of 
this kind have come to our personal knowl- 
edge, which have proved a source of serious 
annoj^ance and expense. Opinions of the 
character here referred to are also of use in 
this connection. 

If by investigation it is as certained that the 
threats are unfounded, opinions containing a 
iull and accurate statement of the facts maybe 
distributed among the trade, and thus relieve 
them from any further fear of purchasing the 
alleged infringing goods. The above consider- 
ations apply with equal force as to the course 
of procedure in bringing suit, as no careful or 
judicious litigant will enter suit upon letters- 
patent trusting to the prima facie evidence 
which they represent of the title of the pat- 
entee to protection for his invention or dis- 
covery. 

Neither is it safe to purchase a patent with- 
out first having such investigation made, in 
order to ascertain whether it infringes upon the 
rights of others and whether it is valid; just as 
should be done in the purchase of real estate, 
for the purpose of ascertaining whether the 
title is good. 

COPY-RIGHTS. 

Copy-rights are granted to residents and 
citizens of the United States. They remain 
in force for a period of twenty-eight years 
irom the time of recordation. 



13 



SCHEDULE OK FEES. 

Gov't Atty's 
Fee. Fee. 

For a Patent, first fee 815. $15. ? Ordinary 

For a Patent, final fee... ...... 20. 15.5 cases. 

For a Caveat 10. 10. 

For a Reissue 80. 30 & upwards. 

For a Trade Mark 25. 20. 

For a Design, 3]4 years,.. 10. 15. 

For a Design, 7 years 15. 15. 

For a Design, 14 years 20. 3 5. 

For Prints and Labels 6. 5, 

For Appeals to the Board 10. 5. 

For Appeals to Commissioner.. 20. 10. 

For App'ls to Dis.C't, docket fee 10. 50 & upwards. 

For interlocutory appeals to the Commissioner no charge 

For Assignments, Gov't and Atty's fees, total, $3 to $5. 

For Copy-rights, Gov't and Atty's fees, total, $5. 

For Preliminary examination, $5. (See pages 4 and 5.) 

FOREIGN PATENTS. 

The fact that American inventions are becom- 
ing of great value in foreign countries on ac- 
count of the improved state of our machinery 
and perfection in the several branches of the 
industrial arts, has made it a matter of import- 
ance that home inventions should be protected 
in foreign countries, for which reason we have 
made it a special object of our practice to secure 
foreign patents : and having, besides other fa- 
cilities, agents abroad, we are prepared to suc- 
cessfully serve inventors in this capacity. 

From the appended schedule of fees, it will 
be noticed that the cost of foreign patents is in 
excess of that of U. S. patents, but it should be 
remembered that none of the countries, (save 
Canada,) requires a model, and that if the ap- 
plication is prepared by an attorney having a 
competent knowledge of the foreign laws, it 
can be made to include several distinct inven- 
tions, for which separate fees would be required 
by our Patent Office, thus compensating for 
the difference in the cost. 



14 



Schedule of Fees for Foreign Patents. 

Great Britain, (including England, Scotland, 

Ireland, Wales and the Channel Islands.).. $250. 

Provisional protection 125. 

Canada, (model required,) (including Quebec, 
Ontario, Manitoba, Novia Scotia, British 
Columbia, and New Brunswick,) five years, 

$50 ; ten years, $70 ; fifteen years 90. 

France 5 100. 

Belgium , 75. 

Austria, (including Hungary) 100. 

Germany, (including Baden, Bavaria, Saxony, 

and Wurlemburg) 100. 

Norway 150. 

Sweden 175. 

Denmark 125. 

Russia, three years, $250; five years, $425; ten 

years 550. 

Spain, (including the Philippine Islands, Porto 

Rico, and Cuba) 100. 

Portugal, five years, $250; fifteen years 400. 

Italy 100. 

Estimates for other countries furnished on 
request. 

TOULMIN & SEMMES, 

709 G Street, N. W., Washington, D. C. 



By permission we refer to : 

Mr. Eugene Carusi, Professor of Law, 
National Law University. 

Hon. John T. Morgan, U. S. Senator. 

Mr. Justice McArthur, of the Supreme 
Court of District of Columbia. 

Hon. H. O. Claughton, Professor of Law, 
National Law University. 



LIBRARY OF CONGRESS 

019 973 420 9 



